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Why You (Probably) Can’t Sell or License Your Patent

Potential clients frequently ask if they can successfully sell or license their patents; unfortunately, the answer is, far more often than not, “no.” Be it a cultural construct of “inventor exceptionalism,” repeated viewing of late-night infomercials by folks who like to tinker, or lazy journalism that elevates human interest stories about successful inventors over a deep explanation of the realities of generating business success, there exists a belief that “if you build a better mousetrap, the world will beat a path to your door.” The truth is that the only person who is guaranteed to make money from a patent is the patent professional that the client hires to get the work done for them.

Why You (Probably) Can’t Sell or License Your Patent
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Patent Lawyer Practice Models that Work and Don’t Work for Startups and Small Companies

Introduction

As someone who works with a wide variety of startups and small companies as the in-house expert interfacing between outside patent lawyers, I have found it helpful to compare and contrast the various legal practice styles encountered, at least because I strive to continuously improve the IP strategy consulting services that I provide my clients. Recently, I have noted that there often appears to be a profound lack of alignment between the desired outcomes that my clients seek from their patent efforts and the business models of many of the lawyers we encounter.

Patent Lawyer Practice Models that Work and Don’t Work for Startups and Small Companies

These lawyers seek to engage clients like mine,

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Startup Patent Strategy: Be Unbreakable

Several of my current clients are startup companies that understand that, to have real value, their patents must be seen by a third party as meaningful to the opportunity--be it customers, revenue stream, or any other business strategy--that this potential potential partner, licensor, or acquirer seeks to access. Put another way, patents generated by early stage companies that are developing innovative technology must “make it cheaper to go through them than around them.” For these types of patent owners, due diligence conducted by third parties is more than just “kicking the tires” of the patent portfolio; instead, their patents will be examined by an expert team to make sure they won’t "break" just when they’re needed most. As an initial aspect of this discussion, it should be stressed that not all patents are equal in value. Some patents--and, in my view, this is the

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Enhancing Patent Outcomes: Designing Applications for Allowance

We all know the patent application process can cost $20,000 or more — and often much more. This alone should give those of us who obtain patents reason to pause and consider how we can and should do better relative to generating patent strategies for clients. Some of my peers will say that patent protection has more hurdles to overcome and requirements to meet today than in years past, and this contributes to the high cost.

Certainly, this is true, but merely shrugging our shoulders and saying something akin to “I’m doing the best I can under the circumstances” is not a satisfactory option for clients who are relying on patent protection to enhance the value of their businesses.

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Patentability Reviews for Innovations

Patent professionals can do a better job providing patentability review, or "opinion," services for innovators. As most readers would recognize, a patentability review assesses whether the invention to be claimed will meet the legal requirements for patentability. In the US, this entails an assessment by a patent attorney, which can be based on a formal or informal search, whether the client’s invention is novel and non-obvious over the prior art. The rules by which a patent attorney makes a determination of patentability are well-established and would not be considered controversial by most experienced practitioners. Nonetheless, as an IP Strategist who works exclusively with clients engaged in developing and delivering meaningful innovations to consumers, I know that these entrenched patentability assessment practices deserve retooling for those clients who can be classified as "innovators." To this end, I believe that the way the patent

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Startup Patent Licensing: Beating the Long Odds

Long odds for patent licensingAchieving meaningful revenue through licensing by startup entrepreneurs can be for all intents and purposes a “unicorn event:” much discussed, but rarely achieved. Notwithstanding this reality, a significant number of startup entrepreneurs who seek to engage me for IP Strategy and patent development consulting assert confidently that their necessity for a patent is based on a business strategy of licensing (or selling) their protected product or technology to an established company. This is not surprising because it is embedded in the DNA of much of society that “if you build a better mousetrap, the world will beat a path to your door.” Late night infomercials featuring famous people and entrepreneur “hero stories” in the press also bolster this conviction. It is certainly heartwarming and inspiring to believe that an "Average Josephine" can become rich solely

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Startup Patent Strategy: US Patent Non-Publication

The TakeawayFor startups whose development efforts lag behind a looming US utility application filing deadline, use of the “Request for Non-Publication” in US patent filing can allow them to preserve the option of shoring up their patent protection for an extended period in the future, while still retaining the priority date of a provisional application filing. This can be valuable for startups that are still fleshing out their product/market fit in customer discovery, but that also have incorporated still relevant technical and functional subject matter in their provisional application. As people even modestly familiar with patents are aware, the filing of a provisional patent application requires followup with a US or PCT utility application that “perfects,” the earlier application no later than one year from that filing date. When the covered technology is fairly well-developed

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Patenting for the Future: A New Approach for Innovators

The traditional patent model is configured to generate protection for an already completed invention. This, by definition, is a backward-looking approach and begs the question of why people are protecting what they have done in the past, when patents are supposed to be about protecting their future. Because strategy is about defining a desired outcome and working backward, an IP Strategist like me necessarily works with clients to identify why they are seeking patent protection in the first place. Only then do we develop a plan to achieve that business goal.

Patenting for the Future: A New Approach for Innovators

Experience shows that such forward-thinking strategies help innovators stay one step ahead of competitors by enhancing their ability to protect future revenue streams that are expected to occur with

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Creating Business Value with Customer-Directed Patent Strategy

When you think about patents, you probably first consider who should be hired to protect ideas from competitors. When I think about patents, I think about what should be protected, and how it can be done efficiently and effectively. Unless you have this nailed down first, it doesn’t matter who you hire to help you, the end product will likely fall short of your goals.

Creating Business Value with Customer-Directed Patent Strategy

In this regard, I’m more concerned about the client’s innovation story and how patentable concepts will benefit her customers. In short, I believe it is the customers we should focus on protecting, not just the product we are selling to them. While a bit more effort may be

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Need Broad Patents Fast? Try This.

Sieze the day: take your patent allowance!That title got your attention, didn’t it? It was meant to. After another successful round of patent application examinations for several clients in the last year, I thought others would like access to my proven patent acquisition methodology. Certainly, there’s a lot more than I can include in this post, and what is presented here should be considered to be only a high level introduction to my process. Moreover, every client requires focused attention to generate the desired patent protection, and not every business scenario mandates this comprehensive approach. But, for those situations where company leadership determines that strong patent protection is a key to achieving the desired business outcomes from investment in innovative products and technology, this methodology is not only recommended, it is required for success. Put simply, if you do the hard work